Creative Staffing, Inc. v. Creative Financial Staffing, LLC
| Decision Date | 12 April 2005 |
| Docket Number | application Serial 74502128,Opposition 91124801 |
| Parties | Creative Staffing, Inc. v. Creative Financial Staffing, LLC |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
THIS OPINION IS NOT CITABLE AS PRECEDENT OF THE TTAB
filed on March 18, 1994
Deborah T. Berkowitz and Matthew S. Nelles of Ruden McClosky, Smith, Schuster & Russell, P.A. for Creative Staffing, Inc.
Jonathan P. Froemel of Barnes & Thornburg LLP for Creative Financial Staffing, LLC
Before Seeherman, Grendel and Rogers, Administrative Trademark Judges.
Rogers, Administrative Trademark Judge:
Creative Financial Staffing, LLC [applicant] seeks a Principal Register registration for CREATIVE FINANCIAL STAFFING, with a disclaimer of FINANCIAL STAFFING, for services identified as "Providing temporary accounting, bookkeeping and other financial services personnel," in Class 35. The application claims first use of the mark, and first use of the mark in commerce, as of April 4, 1994.[1]However, for the purpose of any necessary determination of priority, applicant may rely on its filing date of March 18, 1994.
Creative Staffing, Inc. [opposer] has opposed issuance of a registration to applicant, asserting in its notice of opposition: opposer is the owner of the mark CREATIVE STAFFING; opposer commenced use of that mark "at least as early as 1985 and has used the mark continuously since that date for employment and staffing services, namely employment recruiting and temporary and full-time employment and staffing services"; the consuming public and trade have come to associate CREATIVE STAFFING with opposer and opposer has thereby acquired substantial goodwill in the mark; the services of opposer and applicant, offered under their respective marks, are highly related or similar; the marks are so similar as to create a likelihood of confusion, mistake or deception among consumers when the marks are used for the parties' respective services; and opposer will be damaged if applicant's mark is registered.
Applicant admitted allegations relative to the filing of the parties' respective applications. Otherwise, applicant denied the allegations in the notice of opposition, either expressly or by stating that it does not have sufficient information to enable it to admit or deny.
Opposer has introduced into the record the testimony deposition of Ann Machado, opposer's founder and owner, the testimony deposition of Sheri Cholodofsky, opposer's controller, and the testimony deposition of Sandra d'Hemecourt, a senior account manager for opposer. Various exhibits were introduced during the Machado and Cholodofsky depositions. In addition, opposer filed a notice of reliance on, among other things, applicant's responses to opposer's interrogatories and requests for admissions, and various printed publications.
Applicant has introduced the testimony deposition and exhibits of Daniel J. Casey, its managing member. Applicant has also filed a notice of reliance on opposer's responses to applicant's interrogatories and requests for admissions, on reprints from the USPTO Trademark Electronic Search System (TESS) regarding four non-party registrations, and on various printed publications.
Applicant attached certain materials to its appeal brief, but opposer, in its reply brief, objected to consideration of such materials and we sustain the objection. See Plus Products v. Physicians Formula Cosmetics, Inc., 198 U.S.P.Q. 111, 112 n.3 (TTAB 1978). Any other objections by the parties that require discussion are considered infra, in conjunction with our discussion of what the record establishes.
Opposer has filed an application to register its CREATIVE STAFFING mark, [2] but it does not rely in this case on a registration of its mark and, therefore, the extent of its rights in its mark is a matter for proof. When an opposer is not relying on a registration and the presumptions attendant to ownership of a registration, it bears the burden of pleading and proving its priority. See Hydro-Dynamics Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1 U.S.P.Q.2d 1772, 1773 (Fed. Cir. 1987). In addition, such an opposer must establish that its mark is distinctive of its goods or services either inherently or through the acquisition of secondary meaning. See Towers v. Advent Software, Inc., 913 F.2d 942, 945, 16 U.S.P.Q.2d 1039, 1041 (Fed. Cir. 1990).
Applicant did not assert in its answer that it believed opposer's pleaded mark to be descriptive and non- distinctive. In a case such as this, where the marks are identical but for applicant's addition of a descriptive term, and applicant seeks registration on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), it was incumbent on applicant to put opposer on notice that it would expect opposer to prove distinctiveness. In view of the position adopted by applicant, which is largely demonstrated by its own application, that the involved marks are inherently distinctive, it was entirely reasonable for opposer to conclude that it did not have to pursue the issue of distinctiveness. In fact, opposer contended in its brief (p. 10) that likelihood of confusion was the only issue to be determined. Applicant essentially acquiesced in the contention, when it noted in its brief (p. 8) that the "sole issue for consideration by the Board is whether there is a likelihood of confusion." Accordingly, we consider there to be no issue as to the inherent distinctiveness of opposer's mark.
Notwithstanding our discussion above, we recognize that applicant made certain statements in its brief asserting, variously, that the terms "Creative" and "Staffing," i.e., "the common elements of the two marks," are "descriptive, or at best highly suggestive" and that opposer's pleaded mark "is descriptive or highly suggestive at best, and therefore is not inherently distinctive." We do not view applicant's arguments as signaling a retreat from its statement that the only issue to be considered is likelihood of confusion, which statement implies that at least for purposes of this case both parties should be presumed to have marks. Rather, we view applicant's arguments as indicative of applicant's position that the respective marks are weak and entitled to a narrow scope of protection. While we note that opposer's application seeks registration of its mark under Section 2(f) of the Trademark Act, that claim has been made in the alternative and opposer cannot, therefore, be viewed as having conceded that its pleaded mark is not inherently distinctive.[3] In any event, on this record, i.e., based on the nature of opposer's use of its mark and the services for which it has used its mark, we do not hesitate to conclude that opposer's mark is suggestive and therefore inherently distinctive.[4]
As to priority, we again note applicant's contention that the only issue to be decided is likelihood of confusion, which certainly implies that applicant does not contest opposer's priority. On the other hand, applicant contends that opposer, for many years, limited its services to providing employees for "clerical, light industrial, telemarketing, technical, contract and hospitality staffing." Brief, p. 13, a year 2000 industry directory listing for opposer made of record by applicant's notice of reliance. In addition, applicant contends that opposer did not begin providing services in "the niche of finance and accounting" until at least three years after applicant. Brief, p. 13, certain pages from the Machado deposition. Finally, applicant argues that even after opposer expanded into this niche, it placed permanent employees, not temporary employees, in accounting, bookkeeping and financial services jobs with clients. Brief, p. 14, certain pages from the Machado deposition.
Applicant overreaches in attempting to limit opposer's activities to certain industries or fields by reference to the directory listing. That listing recites that opposer "specializes in" these fields. It does not affirmatively state that opposer offers its services only in these fields. In contrast, the Machado testimony is clear and unequivocal that opposer provides clients with temporary employees in not only the fields listed in the directory but in others as well:
In addition, there is uncontradicted, specific testimony about the types of positions filled in the finance field:
Finally, there is uncontradicted testimony that opposer has made placements in the financial field since it commenced operations:
Machado dep., ...
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